Victoria's Secret Stores Brand Management, Inc. v. Whois Wall Inc.
Claim Number: FA1103001375412
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington, D.C., USA. Respondent is Whois Wall Inc. (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <urlilsecretvictoria.com>, registered with Everyones Internet, Ltd. d/b/a Resellone.net.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.
On March 2, 2011, Everyones Internet, Ltd. d/b/a Resellone.net confirmed by e-mail to the National Arbitration Forum that the <urlilsecretvictoria.com> domain name is registered with Everyones Internet, Ltd. d/b/a Resellone.net and that Respondent is the current registrant of the name. Everyones Internet, Ltd. d/b/a Resellone.net has verified that Respondent is bound by the Everyones Internet, Ltd. d/b/a Resellone.net registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@urlilsecretvictoria.com. Also on March 7, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <urlilsecretvictoria.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <urlilsecretvictoria.com> domain name.
3. Respondent registered and used the <urlilsecretvictoria.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., is a retailer of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, Whois Wall Inc., registered the <urlilsecretvictoria.com> domain name on November 19, 2010. The disputed domain name previously resolved to a website displaying an “adult content” warning screen, advertising and promoting escort services and web cam shows of adult-oriented material, and offering for sale what was purported to be Victoria’s “used, panties, bra’s and socks” via links to other domain names. The disputed domain name does not currently resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the USPTO:
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
The Panel finds that these trademark registrations with the USPTO conclusively support a finding that Complainant has rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that Respondent’s <urlilsecretvictoria.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The modifications to Complainant’s mark in the disputed domain name include the transposition of the terms “Victoria’s” and “Secret,” the deletion of the space between terms, the removal of the apostrophe and letter “s” in “victoria’s,” and the addition the generic terms “ur” and “lil” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that transposing the terms of Complainant’s mark does not prevent a finding of confusing similarity. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”); see also Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL). The Panel also concludes that deleting a single letter from Complainant’s mark does not dispel confusing similarity. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel determines that the addition of generic terms to Complainant’s mark is an inconsequential change. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Finally, the Panel holds that neither deleting spaces or apostrophes nor adding gTLDs distinguishes the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). The Panel therefore finds that Respondent’s <urlilsecretvictoria.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In asserting that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) first requires Complainant to put forth a prima facie case against Respondent before the burden to show rights and legitimate interests transfers to Respondent. Complainant has satisfied its obligation under Policy ¶ 4(a)(ii) in the instant proceeding, but Respondent has defaulted and failed to respond to the Complaint. As a result, Respondent has not contested any of Complainant’s allegations or presented any evidence of rights and legitimate interests. The Panel accordingly concludes that Respondent does not possess rights and legitimate interests and infers that Complainant’s allegations may be accepted as true. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will nevertheless consider the complete record against the Policy ¶ 4(c) to independently conclude whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not affiliated with Complainant and has not been licensed or permitted to use Complainant’s VICTORIA’S SECRET mark in any way. The WHOIS information for the <urlilsecretvictoria.com> domain name indicates that the registrant is “Whois Wall Inc.,” which does not appear to have any association with the disputed domain name. The Panel therefore holds that Respondent is not commonly known by the disputed domain name and does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant contends that Respondent’s <urlilsecretvictoria.com> domain name previously resolved to a website featuring links, presumably of profit to Respondent, to escort services, adult-oriented web cam videos, and a website offering the sale of “Victoria’s used, panties, bra’s and socks.” The Panel finds that Respondent’s use of the disputed domain name to generate profit by misusing Complainant’s mark to host links to other websites does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to an Internet directory website that featured numerous pop-up advertisements for commercial goods and sexually explicit websites).
Complainant asserts that the website previously resolving from the <urlilsecretvictoria.com> domain name displayed an “adult content” warning and advertised and promoted escort services and adult-oriented webcam videos and related products. The Panel finds that using Complainant’s mark in connection with an adult-oriented website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Complainant contends that Respondent’s <urlilsecretvictoria.com> domain name does not currently resolve to any active website. The Panel finds that Respondent’s failure to use the disputed domain names supports a finding that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent previously used the <urlilsecretvictoria.com> domain name to host links to escort services, adult-oriented webcam videos, and related products. Complainant asserts that these links generated profit for Respondent through affiliate fees or in some other manner, and therefore, Respondent used Complainant’s mark in the disputed domain name to attract Internet users to Respondent’s website and create a likelihood of confusion as to the source or affiliation of that resolving site. The Panel finds that these activities evidence bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant also contends that the services and products previously promoted at the <urlilsecretvictoria.com> domain name were adult-oriented advertisements for escort services, webcam videos, and related products, such as “used, panties, bra’s and socks.” The Panel finds that offering adult-oriented products, services and material at the disputed domain name which appropriates Complainant’s mark demonstrates bad faith registration and use under Policy ¶ 4(a)(iii) as such association can tarnish Complainant’s mark and reputation. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant contends that Respondent’s <urlilsecretvictoria.com> does not currently resolve to an active website. The Panel finds that this failure to actively use the disputed domain name further indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <urlilsecretvictoria.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 11, 2011
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